The domain name with which this dispute is concerned is <newyorkdesigncenter.com>.
The Registrar of the domain name as at the date of the Complaint is Register.com,
Inc ("Register.com").

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution
Policy approved by the Internet Corporation For Assigned Names And Numbers ("ICANN")
on October 24, 1999, the ("Policy"), in accordance with the Rules
for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on
October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules For
Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999,
(the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center
(the "Center") in hard copy on June 8, 2001, and by e-mail on June
12, 2001. The fees prescribed under the Supplemental Rules have been paid by
the Complainant.

3.3 The Center sent a request for Registrar verification to Register.com on
June 12, 2001, by e-mail. Register.com responded to the Center's request by
e-mail on June 12, 2001, stating:

(a) that Register.com was the Registrar for the domain name in dispute and
that Roberto Pereira was the current registrant of the <newyorkdesigncenter.com>
domain name, and that the domain name in dispute was active.

3.4 The Center sent a Complaint Deficiency Notification to the Respondent advising
the Respondent of the identity of the actual registrant for the domain name
<newyorkdesigncenter.com>, requesting that the Respondent amend the Complaint
accordingly.

3.5 On June 13, 2001, the Complainant sent an Amendment to Complaint by e-mail
to the Center and to Register.com. The hard copy of the Amendment to Complaint
was sent to the Respondent on June 13, 2001.

3.6 Compliance with formal requirements having been satisfied on June 19, 2001,
the Center sent on the same day a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent by courier, and to both Respondent
and Complainant by e-mail.

3.7 The Center received the Response from the Respondent on July 5, 2001, (electronic
copy) and July 10, 2001, (hard copy). The Center sent an Acknowledgement of
Receipt of Response to the Respondent on July 5, 2001, with an e-mail copy to
the Complainant on the same date. The Center advised the Respondent that the
Response did not comply with the Rules, Paragraph 2(b) and requested that the
Respondent send to the Complainant's representatives a complete copy of the
Response (including the annexures) to the postal address provided in the Complaint.

3.8 On July 5, 2001, the Complainant also indicated a desire to file a reply
to the Response, acknowledging that "acceptance of the reply is within
the discretion of the Panel". The Respondent advised the Center on July
6, 2001, that hard copies of the Response had been sent on July 6, 2001, to
the Complainant, and asserted that replies to the Response would not be in accordance
with the Rules. On July 6, 2001, the Center sent an e-mail to the Respondent
regarding the Center's position on further submissions or "supplemental
filings" other than the Complaint and the Response. It advised that parties
seeking to file additional submissions should seek consent from the Center.

3.9 The Complainant sent a "Reply" to the Center and to the Respondent
which was received by the Center on July 9, 2001, by e-mail and on July 10,
2001, in hard copy.

3.10 The Respondent sent a "Reply of [sic] Complainant's Reply" with
hard copy to the Complainant and Center, received by the Center on July 17,
2001.

3.11 The Complainant sent further submissions by e-mail to the Center and to
the Respondent on July 12, 2001, and on July 23, 2001.

3.12 The Center appointed the Administrative Panel on July 26, 2001, and sent
a Transmission of Case File to the Administrative Panel by e-mail on July 26,
2001. The documentation was received in hard copy by the Panel on July 30, 2001,
in Sydney, Australia.

3.13 All other procedural requirements appear to have been satisfied.

4. Factual background

4.1 Activities of the Complainant

The Complainant is a corporation which owns a building at 200 Lexington Avenue,
New York, USA known as the "New York Design Center", and provides
showroom facilities for the display of furniture and interior design products.

4.2 The Complainant's trade marks

The Complainant is the owner of the service mark "New York Design Center",
US Trade Mark reg. no. 1,972,932, registered on May 7, 1996, with first use
in commerce in 1983. The Complaint states that this was the time at which the
company, originally known as "The New York Furniture Exchange" changed
its name to "The New York Design Center". The trademark is endorsed
with disclaimers to the words "design center", and is registered in
Class 35 (advertising and business) for "providing showroom facilities
for the display of furniture and related interior design products". The
Complainant also has a registered service mark in the United States for the
acronym "NYDC", reg. no. 2368523 in classes 35 and 42 (for which it
did not provide a certificate in its evidence), and a website <nydc.com>
in which it appears to the Panel that the "New York Design Center"
mark and the "NYDC" mark are used together and interchangeably.

The Complaint states that the New York Design Center houses more than 100 showrooms
of individual interior design and furniture companies and has exhibited in evidence
examples of its Spring 2000 catalogue and "Residential Directory".
Although the Complainant has not provided evidence of its advertising expenditure
or hits on its "www.nydc" website (which would have provided helpful
evidence of its reputation), the Complaint asserts that the New York Design
Center "advertises in every American journal catering to interior furnishings
on the market with international distribution including Architectural
Digest, Elle Décor and House Beautiful". Exhibits to the Complaint
provide examples of press clippings confirming the industry's familiarity with
the Complainant. The "Residential Directory" shows that the building
has housed (and may continue to house - the documents are undated) the New York
chapters of the American Institute of Architects (AIA) and the International
Furnishings and Design Association ("IFDA"). A press release of the
Complainant dated April 17, 2001, announces the 75th anniversary of the opening
of the New York Design Center building in 1926, and lists a series of anniversary
functions, including a "Designer's Saturday Student Portfolio Day"
hosting design firms and students from six New York design schools, a "75th
Anniversary Gala Celebration", co-hosted by the publication House Beautiful
with proceeds to certain charities; a "Worldstudio Foundation Benefit"
hosted by Architectural Digest; and the "9th Annual CONSTRUCTION Competition
and Gala Reception" organized by the AIA with another industry organization.

The longevity of the Complainant, the continuity of business in the Complainant's
building and its links to industry publications and professional bodies all
lend weight to the Complainant's assertions of the strong reputation of its
service mark in the interior design industry, locally, nationally and internationally.

4.3 Activities of the Respondent

The Respondent states that he is an associate of the company "3R Propagandas,
Promocoes e Publicidade Ltda", with the "official purpose" of
"publicity, advertising, and similar services, like media, dissemination,
promotion and intermediation". The Respondent has not provided English
translations of the Portuguese language documents exhibited with the Response,
and the Panel relies on the evidence in both the Response and the Complaint
to interpret the documents. The Panel notes that, under paragraph 11 of the
Rules, the language of this administrative proceeding is to be the language
of the registration agreement, which in this case is English. The Respondent
has not sought any alternative determination from the Panel and there is no
evidence that the parties have otherwise agreed.

Respondent asserts that it has qualifications in the field of Industrial Design
and exhibits to his Response a "Certidao de Conclusao de Curso" in
"Desenho Industrial - Habilitacao em Programacao Visual" from UniverCidade,
Rio de Janeiro, dated June 25, 2001. It appears Respondent graduated from this
course on August 20, 1999. The Response also exhibits a certificate of participation
in a seminar on Adobe Print Solutions, dated July 6, 2000. Respondent states
that it has developed "countless works for dozens of companies such
as Helena Rubinstein, Merck, Repsol YPF etc" and exhibits 4 documents which
appear to be advertisements or leaflets. Nothing on these documents indicates
the nature of Respondent's work or contribution to those documents.

5. The Complainant's contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph
4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint
asserts that the domain name in dispute is identical to the Complainant's "New
York Design Center" registered service mark, "the only difference
being those inherent to domain names, i.e., the run-on nature of the words and
the ".com" tag in the domain name".

5.3 In reference to paragraph 4(a)(ii) of the Policy, the Complaint asserts
that the Respondent cannot demonstrate any legitimate interests in respect of
the domain name "New York Design Center". Complainant's submissions
on legitimate interests and bad faith of the Respondent merge confusingly and
are not assisted by their lack of structure and flamboyant language. However,
the following is an attempt by the Panel to summarise the thrust of the Complainant's
contentions:

(a) Respondent's website had no content and no bona fide offering of goods
or services prior to notice to it of this dispute. Respondent's own correspondence
(email April 4, 2001, Exhibit E to the Complaint) confirms that <newyorkdesigncenter.com>
was not an active website prior to Complainant's correspondence with the Respondence
concerning the website (commencing March 22, 2001); and

(b) Respondent's use was not a legitimate non-commercial or fair use of the
domain name, but rather, Respondent intended to use the name for commercial
gain to misleadingly divert consumers. Respondent's lack of legitimate interest
in the domain name is demonstrated by his original assertions that it was involved
principally in the design of jewels, which is "completely different from
providing showroom facilities for the display of furniture and related interior
design products". However, upon creation of his website, "jewels"
appears to be only an incidental adjunct to other "services" provided
by the Respondent. Website contains title pages "moveis" (translation:
furniture) together with "relogios" (watches), "carros"
(vehicles) and "joias" (jewellery), with no content behind them. The
introductory screen states (Complainant's translation) "This is a site
with design of famous and unknown designers. If you are a designer, get in touch
with us to have your creations placed in our showroom. If you appreciate beautiful
design, come in and feel at ease". The use of the word "showroom",
combined with the name of the website and illustration of the "renowned
Guggenheim museum, a hallmark New York City building" "seems to be
a deceptive ploy to have internet users think they are in fact on the veritable
New York Design Center website, located in New York City".

5.4 Respondent's bad faith registration and use of the domain name in relation
to paragraph 4(a)(iii) of the Policy is shown again, according to the Complaint,
by the fact that the website was not active until just after Respondent notified
of this dispute. Complainant asserts that the website "as late of [sic]
April 4, 2001 was still completely blank". Yet, less than one week later
the website began showing signs of life. And the nature of the website
is most troublesome. We had been assured that the nature of Respondent's activities
was to be totally different from Complainant's. It was not until Complainant's
request that the domain name be transferred to it that the website became active."
Respondent's "mimicry" on his website of the "showroom"
services for designers offered by Complainant, with Respondent's illustrations
of furniture, and links to worldwide architectural and design establishments,
confirms that Respondent is intentionally attempting to attract Internet users
to his website in a "deceptive ploy to have internet users think they are
in fact on the veritable New York Design Center website".

5.5 In support of its assertions, Complainant states in addition:

"If Respondent is desirous of connecting itself to New York through its
name, it well may. It may also use the words "Design" and "Center"
even in conjunction with one another. What it cannot do is use these names together,
as the combination has been trademarked, and is internationally identified in
the world of design furnishings as belong to our client.
Of course, Respondent knows this. He constructed his website under a particular
name and in such a way that the bad faith is glaring, as well as shameless".

6. Respondent's Contentions

6.1 In reference to the element in paragraph 4(a)(i) of the Policy, Respondent
does not contest that the domain name is identical to the Complainant's registered
service mark. He does however appear to contend that Complainant's trade mark
was registered in error or should now be challenged, on grounds that the words
are "generic expressions of common use", as evidenced by the following:

(a) the words "New York Design Center" appear in more than 260 web
pages found by conducting a search on that string in <google.com>;

(b) "there is a museum with the name New York Design Center, at Thompson
Ave., Long Island City, NY, <dside.yucom.be/pag70_03.htm>"; and

(c) other institutions have the same name, as at <hobokenfloors.com/Dcenters.html>,
"that work in the field of floor design and interior decoration
with no commercial relation to Complainant's New York Design Centre Inc".

Respondent asserts these uses of the mark are without proper authorisation
from the Complainant.

6.2 In relation to Paragraph 4(a)(ii) of the Policy and responding to allegations
of lack of legitimate interest in the disputed domain name, Respondent asserts
that his legitimate interest "can easily be proved". It does not argue
that it used or had made demonstrable preparations to use the domain name before
notice of this dispute, nor does it argue that it has been commonly known by
the domain name. However, it does appear to submit that it is now making a legitimate
non-commercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers. Respondent submits:

(a) the purpose of registering the domain name <newyorkdesigncenter.com>
was the goal of "attracting designers - well known or just starting their
careers - specialized in the many fields of the design activities. In the site,
the designers would constitute a community of professionals for the exchange
of ideas, experiences and the promotion of their works". Further, "with
these goals in mind, 3R decided to build a site with a name that could show
its purposes - being a design center - but also had a sufficiently strong appeal
for the interested people and be, at the same time, compatible with the enterprising
spirit. It is well known that the city of New York is one of the most important
centers in modern design, together with Milan, Tokyo, Paris etc. This is the
sole reason for choosing the name."

Respondent asserts "obvious relations between Respondent's business and
the disputed domain name".

(b) Response states: "Respondent's website has the objective of showing
the work of designers that were interested in the dissemination of their creations
in the many areas of design, like; jewelry, clothes, cars, consumer products,
not excluding, of course, furniture Complainant, by its turn, describe[sic]
itself as a luxurious commercial center focused in selling furniture and related
interior design products. As can be seen, there are no means to allege that
the website misleads or confuse [sic] its customers". Respondent confirms
in his further submissions (July 11, 2001), that his "website divulges
designers works in several areas and it does not sell goods" [Respondent's
emphasis].

6.3 In relation to paragraph 4(a)(iii) of the Policy, Respondent states:

"About the allegation that Respondent took six months to launch its website,
doing this just after the exchange of mail with the Complainant, this can be
easily explained.

Respondent needed time to organize the new activity to be developed, and worked
with the necessary calm to develop the idea, since this is a site that requires
research in many areas of the vast art/science of design. Complainant's
unfair pretension just came to haste the launch of the website".

Again, although the Response is not structured clearly according to the criteria
set out in the Policy with respect to evidence of bad faith, Respondent appears
to submit it has not intentionally attempted to attract, for commercial gain,
Internet users to his website by creating a likelihood of confusion with the
Complainant's mark as to the source, sponsorship, affiliation or endorsement
of his website. As set out in paragraph 6.2(b) above, Respondent asserts there
can be no confusion between his website and Complainant's mark, because Respondent
is not in the business of "selling" design products, rather, it merely
displays various designers' goods on his website.

7. Discussion and Panel Findings

7.1 This section is structured by reference to the elements required by paragraph
4(a) of the Policy.

7.2 Domain Names identical or confusingly similar to Complainant's Marks.

The domain name in dispute, <newyorkdesigncenter.com>, is identical to
the mark "New York Design Center" owned by the Complainant. The Panel
agrees with the Complainant that the run-on of words and the ".com"
gTLD suffix serve no relevant distinguishing purpose.

The Respondent appears to contest the Complainant's rights in the mark, both
in the United States, Brazil, and internationally. The trade mark registration
is current and valid in the United States. The Complainant on any view has rights
in the words "New York Design Center" used as a trademark or service
mark. Respondent cites, in his supplementary submissions following his Response,
the WIPO decision in First American Funds, Inc. v Ult.Search, Inc,Case
No. D2000-1840. That case is not on all fours with this one. First, over
40 U.S. trademarks were registered or pending which consisted of or included
the words "First American", many of which fell within the broad category
of financial services. In contrast, a trade mark search through Register.com,
which could easily have been conducted by Respondent (and which, as Complainant
points out, should have been conducted under Register.com's rules prior to registering
the domain name), shows that there is no other identical mark to "New York
Design Center" in any class, either in the United States, Europe or Canada.
Further, a strong dissenting opinion in the "First American" matter
argued:

"The Panel's authority to act and the parameters within which it may act
are carefully circumscribed by the Policy and by the Uniform Rules. Nowhere
in the Policy or the Uniform Rules is the Panel asked to consider in its analysis
the number of parties who have registered a trademark identical or similar to
that registered by the Complainant or who use business names similar to that
of the Complainant, nor in what fields of commerce or in what geographic areas
such trademark registrations are effective or in which such businesses are engaged.

I believe that this omission not only was intended, but also is practical and
effective. The Internet knows no geographic boundaries."

Further, the Complainant has been quite vigilant in protecting its trademark,
as evidenced by its actions with respect to use by Epson America, Inc, and by
Hoboken Floors, although Panel's investigation in this respect confirms Complainant's
contention that use of the mark by Hoboken Floors was descriptive, and not use
as a trade mark.

Respondent's citation of the <dside.yucom.be/pag70.03.htm> address leads
to a directory of international design museums linked to a Belgian design website
titled "D Side 4 Design". It appears that the website creator has
simply obtained the incorrect address for the New York Design Center, listing
it at Thompson Avenue, Long Island City, U.S.A. Complainant's online AOL Yellow
Pages search exhibited to his Reply confirms this.

The Panel's search for "new york design center" using the Google
search engine (the same search as the Response refers to in paragraph B.3.)
returned 454 items. The Complainant's site is the first item. Other than the
Respondent's site, all other sites in the first 20 items of the search refer
to the Complainant, most containing links to the Complainant's <nydc.com>
website. The Complainant asserts, and the Panel's investigations tend to confirm,
that the "thousands" of references to the New York Design Center on
the web referred to in the Response at paragraph B.3. refer without exception
to furniture or design companies which have showrooms in the New York Design
Center building.

If Respondent's contentions were to be contested in a trade mark litigation
in the appropriate jurisdiction, it is the Panel's view that these website references
to the "New York Design Center" are not uses as trade or service marks
which might weaken Complainant's rights in its trade marks. They are simply
indicating the location of businesses at the New York Design Center.

The fact that the Complainant's trade mark is not argued by the Complainant
to be a famous mark which has acquired trade mark status worldwide, nor that
the mark is registered in Brazil, is not relevant. The Policy simply requires
(in 4(a)(i)) that the Respondent's domain name is identical or confusingly similar
to a trademark or service mark in which the complainant has rights. The Complainant
has convincingly established this.

It remains, therefore, for Complainant to prove that the Respondent has no
rights or legitimate interests in respect of the domain name, and that the domain
name has been registered and is being used in bad faith.

7.3 The Respondent has no rights or legitimate interests in the domain names

Paragraph 4(c) of the Policy lists a number of circumstances which, if proven
to exist by the Respondent, can be taken to demonstrate a Respondent's rights
or legitimate interests in the domain name.

For purposes of paragraph 4(c)(i), Respondent cannot demonstrate use or demonstrable
preparations to use the domain name in connection with a bona fide offering
of goods or services. His website had no relevant content prior to notice of
this dispute.

In relation to paragraph 4(c)(ii), Respondent has not demonstrated that it
has been commonly known by the domain name.

In relation to paragraph 4(c)(iii), Respondent's attempts to demonstrate a
legitimate use of the domain name, without intent for commercial gain to misleadingly
divert consumers to his business are not credible:

- e-mail correspondence from the Respondent, translated by the Complainant
and exhibited to the Complaint, asserts that as at March 23, 2001, the Respondent's
"enterprise" was for "publicity, marketing, graphic design".
Later correspondence (March 30, 2001 and April 4, 2001), from the Respondent's
legal counsel in Brazil, Tavares & Co Intellectual Property, suggests that
the Respondent's activity was as a "design firm", "principally
related to design of jewels";

- currently, the Respondent's website has little content but contains references
to "furniture", "watches", "cars" and "jewels",
with no content. The copy on the title page (see paragraph 5.3(b) above) implies
that consumers have access to this "virtual" showroom to browse at
leisure. His "links" page has 3 buttons: "Casa Shopping",
"cursos de design" (a link to a directory of design courses and design
establishments) and "philippe starck" (no content). The "Casa
Shopping" page refers to a shopping centre located on Av. Ayrton Senna
in Rio de Janeiro, with further pages showing centre layout, directory of retailers,
product illustrations, contact details and so on;

- the addition to the website, after commencement of this dispute, of the "Casa
Shopping" pages and content concerning a particular shopping centre which
apparently houses a number of furniture retailers or design establishments,
belies Respondent's contention that there is no similarity between his and the
Complainant's businesses. The only content of substance on Respondent's website
concerns a shopping centre which houses, among other things, retailers in the
design industry. While the Respondent's connection to this shopping centre is
not known, it is a reasonable assumption that it has some commercial link with
the centre, for example, as his publicity consultant.

- the use by the Respondent of the meta tags "New York Design Center"
and "new york design center" in the source code for his web site persuades
the Panel that the Respondent plainly intends for commercial gain to misleadingly
divert consumers to his website.

As with the decision in Sydney Opera House Trust v Trilynx Pty LimitedCase No. D2000-1224, in which it was stated
that "there is only one Sydney Opera House", there is only one "New
York Design Center". It is in New York. The Respondent resides in Brazil.
The Respondent has qualifications in the area of design. The New York Design
Center is well-known in the design industry both in the United States and internationally,
as evidenced in its listings in international directories of design centres,
coverage in internationally-distributed design industry publications and its
own publicity. The Respondent should therefore have been aware of the existence
and reputation of the Complainant, and does not deny it. The Panel does not
accept Respondent's argument that it used the words "New York" legitimately
because it is one of several world centres of design excellence. The Respondent
is apparently in the business of design, but has nothing to do with New York.
It has given to the Complainant mixed messages as to precisely what commercial
endeavours it intended to conduct using the disputed domain name. The Respondent
has shown no credible evidence apart from his qualifications and the existence
of the website itself of any legitimate commercial endeavours in the area of
design.

The Panel therefore finds that, by using the domain name <newyorkdesigncenter.com>,
Respondent intended for commercial gain to misleadingly divert consumers to
his business and has shown no legitimate interests in the domain name. Accordingly,
the Complainant has established paragraph 4(a)(ii) of the Policy.

7.4 The domain name has been registered and is being used in bad faith

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration
in bad faith and use in bad faith.

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances,
in particular but without limitation, if found by the Panel to be present, shall
be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location."

Register.com's Service Agreement contains a rule that it is the responsibility
of the applicant for registration of a domain name to determine whether its
domain name registration infringes or violates someone else's rights. Register.com
provides a link to a trade mark search site. A search for the exact mark "New
York Design Center" would have confirmed quickly that the mark was a registered
trademark in the United States owned by the Complainant.

The Panel in the Sydney Opera House decision Case
No. D2000-1224 cited the decision SportSoft Golf, Inc. v. Hale Irwin's
Golfers' Passport (FA94956) in which a finding of bad faith was made where
the respondent "knew or should have known" of the registration and
use of the trademark prior to registering the domain name.

The Respondent, if following Register.com's rules in its Service Agreement
with Register.com, should have conducted a trade mark search. That search would
have shown the Complainant's interest in the disputed mark. Further, Panel's
investigations show that in a rudimentary search of the world wide web, Respondent
would have encountered numerous listings and references to the Complainant.

Respondent's design background, together with his use of the identical words
to the Complainant's "New York Design Center" service mark, the ease
of discovering the Complainant's rights in the mark, Respondent's lack of credible
connection with the city of New York other than that it being one of the world
centers of design excellence, the structure and content of Respondent's website
with the deceptive similarity of the "CasaShopping" website pages
to the Complainant's services, and Respondent's failure to demonstrate credibly
any real business in commercial design prior to this dispute, result in an irresistible
implication of opportunistic bad faith. The Respondent's website shows that
it is making or attempting to make forays into a similar industry to that of
the Complainant. The Panel finds that the only credible purpose of the Respondent
in registering and using the domain name <newyorkdesigncenter.com> must
have been intentionally to attempt to attract, for commercial gain, Internet
users to his website by creating a likelihood of confusion with the Complainant's
mark as to some sort of affiliation or endorsement of the Respondent's website
or of products or services on his website. The use of the Complainant's name
and mark in the Respondent's site's meta tags are corroborative of the Panel's
conclusion that the Respondent's registration and use of the domain name in
dispute was in bad faith.

Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii)
of the Policy.

8. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the Policy
have been established by the Complainant. The Panel therefore orders, in accordance
with paragraph 4(i) of the Policy, that the domain name <newyorkdesigncenter.com>
be transferred by Register.com to the Complainant, New York Design Center, Inc.